UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner
`
`v.
`
`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner
`
`Patent No. 9,901,123
`
`Case No. IPR2020-01602
`
`DECLARATION OF CHARLES E. CLEMENS
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .......................................................................................... 1
`I.
`PROFESSIONAL QUALIFICATIONS ........................................................ 2
`II.
`III. RELEVANT LEGAL STANDARDS ............................................................ 5
`IV.
`THE ʼ123 PATENT ........................................................................................ 8
`A.
`Technology Background ...................................................................... 8
`B.
`Summary of the ’123 Patent ................................................................. 9
`C.
`Prosecution History of the ʼ123 Patent .............................................. 14
`CLAIM CONSTRUCTION ......................................................................... 15
`V.
`LEVEL OF ORDINARY SKILL IN THE ART .......................................... 17
`VI.
`VII. OVERVIEW OF THE CITED REFERENCES ........................................... 18
`A.
`Hon (Ex. 1005) ................................................................................... 18
`B.
`Brooks (Ex. 1006) .............................................................................. 21
`C. Whittemore (Ex. 1007) ....................................................................... 23
`D.
`Susa (Ex. 1008) .................................................................................. 24
`E.
`Ray (Ex. 1009) ................................................................................... 24
`VIII. PETITIONER’S ASSERTED GROUNDS DO NOT RENDER
`CLAIMS 1-7, 9, 11-19, 21, AND 23-26 OBVIOUS ................................... 25
`A.
`Claims 1 and 15: “wicked into contact” limitation ............................ 25
`1.
`Hon does not teach or suggest that “the mixture … can be
`wicked into contact with the electrical resistance heater
`and volatilized.” ....................................................................... 25
`A POSA would not have been motivated to modify
`Hon’s device with Whittemore’s wick/heater. ........................ 32
`Claims 1 and 15: “puff-actuated controller …” limitation ................ 39
`1.
`Hon does not teach or suggest “a puff-actuated controller
`within the tubular outer housing and adapted for
`regulating current flow through the electrical resistance
`heater during draw” .................................................................. 39
`
`B.
`
`2.
`
`-i-
`
`Ex. 2001-i
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`C.
`
`2.
`
`A POSA would not have found it obvious to modify
`Hon’s device with the control circuitry from Brooks .............. 43
`Selected dependent claims would not have been obvious for
`additional reasons. .............................................................................. 51
`1.
`Claims 11 and 23: “the cartridge is electrically
`conductive” .............................................................................. 51
`Claims 14 and 24: “wherein the absorbent fibrous
`material is in contact with the electrical resistance heater” ..... 52
`
`2.
`
`-ii-
`
`Ex. 2001-ii
`
`

`

`IPR2020-01602
`U.S. Patent No. 9,901,123
`
`I, Charles E. Clemens, do hereby declare:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I am making this declaration at the request of RAI Strategic Holdings,
`
`Inc. (“Patent Owner” or “RAI”) in the matter of the Inter Partes Review (“IPR”) of
`
`U.S. Patent No. 9,901,123 (“the ’123 patent”).
`
`2.
`
`I am being compensated for my work in this matter at my standard hourly
`
`rate of $585 for such consulting services. My compensation in no way depends on
`
`the outcome of this proceeding.
`
`3.
`
`In preparing this Declaration, I considered the following materials:
`
`a. The ’123 patent (Ex. 1001) and its file history (Ex. 1002);
`
`b. Petition for Inter Partes Review of U.S. Patent No. 9,901,123,
`
`IPR2020-01602 (Paper 2);
`
`c. Declaration of Mr. Stewart Fox (Ex. 1003);
`
`d. Chinese Patent CN2719043Y to Hon, including an English
`
`translation (Ex. 1005) (“Hon”);
`
`e. U.S. Patent No. 4,947,874 to Brooks et al. (Ex. 1006) (“Brooks”);
`
`f. U.S. Patent No. 2,057,353
`
`to Whittemore, Jr. (Ex. 1007)
`
`(“Whittemore”);
`
`g. European Patent EP 0845220 B1 to Susa et al. (Ex. 1008) (“Susa”);
`
`-1-
`
`Ex. 2001-0001
`
`

`

`h. U.S. Patent No. 4,284,089 to Ray (Ex. 1009) (“Ray”);
`
`i. PMUSA teardown report on Ruyan device (Exs. 1019, 1020);
`
`j. RJR teardown report on Ruyan device (Ex. 1023);
`
`k. U.S. Patent No. 6,095,153 to Kessler et al. (Ex. 1030) (“Kessler”);
`
`l. Decision – Institution of Inter Partes Review (Paper 9); and
`
`m. Any other materials referenced herein.
`
`II.
`
`PROFESSIONAL QUALIFICATIONS
`
`4.
`
`My professional background and technical qualifications are reflected in
`
`my curriculum vitae, which is attached as Appendix A.
`
`5.
`
`I have over 40 years of experience as an engineer, executive, and
`
`consultant in the medical device industry.
`
`6.
`
`In 1979, I obtained a Bachelor of Science degree in Mechanical
`
`Engineering from San Diego State University.
`
`7.
`
`From 1981 to 1995, I worked at IVAC Corporation (now CareFusion, a
`
`subsidiary of Becton Dickinson), a company that pioneered intravenous medication
`
`delivery systems. During my time at IVAC, I worked in multiple roles, including as
`
`a product designer, engineering manager, and technical director for the largest
`
`medication delivery system program the company had ever attempted, which resulted
`
`in launching the product in both the US and European markets. My work at IVAC
`
`involved design, development, marketing, launch, and manufacturing of numerous
`
`-2-
`
`Ex. 2001-0002
`
`

`

`drug delivery devices and vital sign monitoring systems. My design and development
`
`work at IVAC led to the filing of five patents on which I was a named inventor. The
`
`focus of my work was in both durable and disposable products utilizing small
`
`mechanisms, plastic injection molded parts produced in quantities of millions, and
`
`precision assembly of parts to achieve high production quality and functional
`
`reliability.
`
`8.
`
`In 1990, I established and managed training for specialized design tools
`
`for Design for Manufacturing and Assembly (DFMA), a design process intended for
`
`optimizing assemblies and part count for small plastic devices produced in high
`
`quantities.
`
`9.
`
`From 1995 to the present, I have been operating a medical device design
`
`and development consulting company as the Founder and Principal Consultant. My
`
`consulting company focuses on developing innovative medical device products and
`
`bringing them to market. During this time I have worked extensively on dozens of
`
`medical device designs across many clients in the areas of (a) respiratory care devices
`
`such as personal inhalers, (b) liquid medication delivery devices, including
`
`intravenous (“IV”) systems and injectors, (c) hemodialysis and other blood handling
`
`systems, and (d) in-vitro diagnostic systems.
`
`10. As a consultant, I have performed design, analyses, prototyping, and
`
`testing activities of numerous inhalation products. Between 1995 and 1998, I
`
`-3-
`
`Ex. 2001-0003
`
`

`

`developed a custom closed loop drug vaporizer and reclamation system applied to full
`
`and partial liquid ventilation therapy for respiratory distress syndrome in both infants
`
`and adults, including designing and building clinical trial systems credited with saving
`
`infant lives. This included the design of a unique high volume drug vaporizer utilizing
`
`high surface area wicking and heating that was integrated directly in-line with the
`
`patient’s breathing circuit.
`
`11. Between 1999 and 2000, I developed a low cost, injection molded, high
`
`performance drug aerosol generator for use in inhaler products for Aerogen
`
`Incorporated. In 2003, I collaborated with HP to develop an optimized print head
`
`technology utilizing solid state vaporization to generate respirable aerosol then
`
`developed aerosol quality testing systems and directed computational fluid dynamic
`
`analysis of a small e-cigarette inhaler product design indicated also for therapeutic
`
`inhaled nicotine delivery for InJet Digital Aerosols. Between 2004 and 2012, I
`
`assisted several companies in various inhaler product design projects, such as design
`
`reviews, risk analyses, and design verification testing. This work was performed for
`
`companies such as Dura Pharmaceuticals (2004), KOS Pharmaceuticals BAI (2006),
`
`and General Pharm Partners (2012).
`
`12.
`
`I am identified as an inventor on 13 issued patents and 3 applications in
`
`the field of medical devices, including small mechanisms, plastic injection molding
`
`and assembly, patient medication delivery devices, and fluidic control devices.
`
`-4-
`
`Ex. 2001-0004
`
`

`

`
`
`13.
`
`I have worked on and am familiar with hundreds of plastic medical
`
`device assemblies and mechanisms throughout my career and have significant
`
`experience with medication delivery systems, including MDI-type devices. Further,
`
`I have analyzed many injector devices utilizing small plastic dose counting
`
`mechanisms.
`
`14.
`
`I have reviewed the ʼ123 patent, and I am familiar with the subject matter
`
`of that patent, which is within the scope of my education and professional experience.
`
`III. RELEVANT LEGAL STANDARDS
`
`15.
`
`I have been asked to provide my opinion as to whether certain claims of
`
`the ʼ123 patent would have been obvious to a person of ordinary skill in the art
`
`(POSA) at the time of the invention, in view of the alleged prior art.
`
`16.
`
`I am an engineer by training and profession. The opinions I am
`
`expressing in this Declaration involve the application of my knowledge and
`
`experience to the evaluation of certain alleged prior art with respect to the ʼ123 patent.
`
`My formal knowledge of patent law is no different than that of any lay person.
`
`Therefore, I have requested the attorneys from Jones Day, who represent RAI, to
`
`provide me with guidance as to the applicable patent law in this matter. The
`
`paragraphs below express my understanding of how I must apply current principles
`
`related to patent validity to my analysis.
`
`
`
`-5-
`
`
`
`Ex. 2001-0005
`
`

`

`
`
`17.
`
`It is my understanding that in determining whether a patent claim is
`
`obvious in view of the prior art, the Patent Office must construe the claim by giving
`
`the claim its plain and ordinary meaning, consistent with the specification and
`
`prosecution history. For the purposes of this review, I have construed each claim term
`
`in accordance with its plain and ordinary meaning.
`
`18.
`
`It is my understanding that a claim is unpatentable under 35 U.S.C. § 103
`
`if the claimed subject matter as a whole would have been obvious to a person of
`
`ordinary skill in the art at the time of the invention. I also understand that an
`
`obviousness analysis takes into account the scope and content of the prior art, the
`
`differences between the claimed subject matter and the prior art, and the level of
`
`ordinary skill in the art at the time of the invention.
`
`19.
`
`In determining the scope and content of the prior art, it is my
`
`understanding that a reference is considered analogous prior art if it falls within the
`
`field of the inventor’s endeavor. In addition, a reference is analogous prior art if it is
`
`reasonably pertinent to the particular problem with which the inventor was involved.
`
`A reference is reasonably pertinent if it logically would have commended itself to an
`
`inventor’s attention in considering his problem. If a reference relates to the same
`
`problem as the claimed invention, that supports use of the reference as prior art in an
`
`obviousness analysis.
`
`
`
`-6-
`
`
`
`Ex. 2001-0006
`
`

`

`20.
`
`To assess the differences between the prior art and the claimed subject
`
`matter, it is my understanding that 35 U.S.C. § 103 requires the claimed invention to
`
`be considered as a whole. This “as a whole” assessment requires a showing that one
`
`of ordinary skill in the art at the time of invention, confronted by the same problems
`
`as the inventor and with no knowledge of the claimed invention, would have selected
`
`the elements from the prior art and combined them in the claimed manner.
`
`21.
`
`It is my further understanding that the Supreme Court has recognized
`
`several rationales for combining references or modifying a reference to show
`
`obviousness of claimed subject matter. Some of these rationales include: combining
`
`prior art elements according to known methods to yield predictable results; simple
`
`substitution of one known element for another to obtain predictable results; a
`
`predictable use of prior art elements according to their established functions; applying
`
`a known technique to a known device (method or product) ready for improvement to
`
`yield predictable results; choosing from a finite number of identified, predictable
`
`solutions, with a reasonable expectation of success; and some teaching, suggestion, or
`
`motivation in the prior art that would have led one of ordinary skill in the art to modify
`
`the prior art reference or to combine prior art reference teachings to arrive at the
`
`claimed invention.
`
`-7-
`
`Ex. 2001-0007
`
`

`

`
`
`IV. THE ʼ123 PATENT
`
`A. Technology Background
`22. Heated and not burned tobacco smoking articles as alternatives to
`
`traditional combusted tobacco cigarettes have been investigated and developed for
`
`more than 50 years. The primary objective has been to provide an inhalable substance
`
`that is a tobacco derived material in various embodiments as a non-combusted aerosol
`
`or vapor form that closely replicates the historical smoking experience of a burned
`
`cigarette.
`
`23. Starting in the 1980s, many smoking articles of various kinds utilizing a
`
`range of technologies have been proposed and produced through the years ranging
`
`from combusting solid or liquid fuel and transferring this heat to tobacco substances
`
`in a cigarette form to applying electronic energy to heat and vaporize the tobacco
`
`substances. All of these smoking articles include a consumable “cigarette” like
`
`element to closely emulate a combustible cigarette. Typical consumable cigarette
`
`technology can range from reduced size traditional cigarettes to which heaters are
`
`applied, special cartridges with tobacco materials with integral heaters, to carbon
`
`tipped cartridges transferring heat to tobacco materials.
`
`24. Electronic energy supplied via battery into conductive elements with
`
`resistive properties are common technologies employed in many of these
`
`embodiments since the 1990s. These resistive elements are strategically located
`
`
`
`-8-
`
`
`
`Ex. 2001-0008
`
`

`

`
`
`around and/or within the tobacco derived materials which also typically includes
`
`aerosol forming materials to create the smoking vapors. By the early 2000s, a person
`
`skilled in the art would have been well aware of the above technologies which had
`
`been deployed in various products and in a variety of approaches.
`
`B.
`25.
`
`Summary of the ’123 Patent
`I have reviewed the ’123 patent and its claims. In this declaration, I
`
`address the patentability of the claims challenged by Petitioner, claims 1-7, 9, 11-19,
`
`21, and 23-26.
`
`26. The two independent claims that Petitioner challenges (claims 1 and 15)
`
`are reproduced below.
`
`1. An electrically-powered, aerosol-generating smoking article
`
`comprising:
`an electrical power source within a tubular outer housing having a
`mouth-end and an end distal to the mouth-end;
`at least one electrical resistance heater powered by said electrical power
`source;
`a puff-actuated controller within the tubular outer housing and adapted
`for regulating current flow through the electrical resistance heater during
`draw, the controller comprising a sensor adapted for sensing draw on the
`smoking article by a user; and
`a rod-shaped carrier device engaged with the mouth-end of the tubular
`outer housing and comprising a cartridge providing a liquid storage
`compartment containing a mixture comprising a tobacco extract and an
`aerosol-forming material absorbed within an absorbent fibrous material,
`the cartridge having a generally tubular shape and adapted for airflow
`therethrough;
`
`
`
`-9-
`
`
`
`Ex. 2001-0009
`
`

`

`wherein the rod-shaped carrier device is operatively positioned such that,
`during draw, the mixture comprising the tobacco extract and the aerosol-
`forming material can be wicked into contact with the electrical resistance
`heater and volatilized to produce a visible mainstream aerosol
`incorporating tobacco components or tobacco-derived components that
`can be drawn into the mouth of the user of the smoking article.
`*
`*
`*
`15. An electrically-powered, aerosol-generating smoking article
`comprising:
`an electrical power source in the form of a battery within a tubular outer
`housing having a mouth-end and an end distal to the mouth-end;
`at least one electrical resistance heater powered by said electrical power
`source;
`a puff-actuated controller within the tubular outer housing and adapted
`for regulating current flow through the electrical resistance heater during
`draw, the controller comprising a sensor adapted for sensing draw on the
`smoking article by a user; and
`a rod-shaped carrier device removably engaged with the mouth-end of
`the tubular outer housing and comprising a cartridge providing a liquid
`storage compartment containing a mixture comprising a tobacco extract
`comprising nicotine and an aerosol-forming material selected from
`glycerin, propylene glycol, or a mixture thereof, the mixture absorbed
`within an absorbent wicking material, the cartridge having a generally
`tubular shape and adapted for airflow therethrough;
`wherein the rod-shaped carrier device is operatively positioned such that,
`during draw, the mixture comprising the tobacco extract and the aerosol-
`forming material can be wicked into contact with the electrical resistance
`heater and volatilized to produce a visible mainstream aerosol
`incorporating tobacco components or tobacco-derived components that
`can be drawn into the mouth of the user of the smoking article.
`Ex. 1001 at 32:50-33:8, 33:41-34:2.
`
`-10-
`
`Ex. 2001-0010
`
`

`

`
`
`27. Claims 2-14 depend from claim 1, directly or indirectly. Id. at 33:9-40.
`
`Claims 16-26 depend, directly or indirectly, from claim 15. Id. at 34:3-30.
`
`28. The ’123 patent generally discloses smoking articles that heat tobacco
`
`instead of burning it like in traditional cigarettes. Id. at 4:42-52. For example, the
`
`’123 patent discloses smoking articles that “produce aerosols that are not necessarily
`
`… a result of burning of tobacco, but rather … a result of the application of heat upon
`
`tobacco or materials that are in contact with tobacco.” Id. at 4:47-52. Such products
`
`are sometimes referred to as “heat-not-burn” articles.
`
`29.
`
`In addition to heat-not-burn articles, the ’123 patent also describes the
`
`use of e-liquid as an aerosol forming material. Id. at 13:18-21. For example, the
`
`patent discloses aerosol-forming material formulations of mixtures of glycerin and
`
`water, or mixtures of propylene glycol and water. Id. at 14:13-15.
`
`30. The ’123 patent notes that the aerosol-forming material can be
`
`maintained within the smoking article in a number of ways. For example, the aerosol-
`
`forming material can be contained within a container in liquid form, or soaked within
`
`absorbent fibrous materials or sponge-like materials. Id. at 14:26-29.
`
`31. The smoking articles disclosed in the ’123 patent contain control
`
`circuitry that may include a controller for regulating current flow through the device
`
`during draw by the user. Id. at 30:37-32:34. The controller may be “puff-actuated,”
`
`
`
`-11-
`
`
`
`Ex. 2001-0011
`
`

`

`
`
`meaning that the device senses when a user draws (or takes a puff) on the device and
`
`then actuates the control circuitry to operate the device. Id. at 30:37-32:34, 20:63-67.
`
`32. Figure 1, reproduced below, shows a longitudinal cross-sectional view
`
`of one embodiment of the ’123 patent invention:
`
`
`
`33. The smoking article 10 is “rod-like or tubular in nature, generally akin
`
`to a cigarette-type or cigar-type smoking article” and has an outer housing 20 that is
`
`likewise “generally tubular in shape.” Id. at 19:41-50. The outer housing 20 includes
`
`a mouth-end 15 and distal end 13, with “the distal end compris[ing] an opening
`
`adapted for intake of air into the smoking article 10.” Id. at 19:59-64.
`
`34. An electric power source 36, “such as at least one battery” is located
`
`within the outer housing 20. Id. at 20:12-13. The smoking article 10 further includes
`
`
`
`-12-
`
`
`
`Ex. 2001-0012
`
`

`

`a controller 50 that is powered by the electric power source 36. (Id. at 20:33-43.) The
`
`’123 patent describes example circuits that can be included in the controller 50 (see,
`
`e.g., id. at 20:40-48, 30:37-32:34, describing Figs. 4 & 5) and further states that
`
`“[r]epresentative types of electronic control components” for the controller 50 may
`
`include those of U.S. Patent No. 4,947,874 to Brooks (id. at 20:43-48). Brooks is one
`
`of the secondary references Petitioner relies on in the Petition. See, e.g., Petition at
`
`16-17, 25-29.
`
`35.
`
`In the embodiment of Figure 1, the smoking article 10 includes a
`
`cartridge 85 that contains tobacco 89 of some form and an aerosol-forming material.
`
`Ex. 1001 at 22:1-3. “The tobacco 89 and the aerosol-forming material can be in the
`
`form of an intimate mixture or provided in separate regions of the cartridge 85.” Id.
`
`at 22:3-6. The smoking article 10 further includes a resistive heating element 72 that
`
`“can be employed in close proximity to an absorbent wicking material such that
`
`aerosol-forming material can be wicked or otherwise transferred so as to contact the
`
`second resistance element or contact an area in close proximity to the second
`
`resistance element (e.g., a region that is exposed to a [sic] the heat produced by the
`
`second resistance element).” Id. at 21:38-45. “The representative smoking article 10
`
`is assembled such that a certain amount of aerosol-forming material and tobacco
`
`components can be wicked or otherwise transferred to heating element 72 or the
`
`region in close proximity to the heating element.” Id. at 22:20-24.
`
`-13-
`
`Ex. 2001-0013
`
`

`

`
`
`C.
`36.
`
`Prosecution History of the ʼ123 Patent
`I have reviewed the prosecution history of the ’123 patent. See Ex. 1002.
`
`37. Claims 1 and 15 of the ’123 patent are independent. Independent claim 1
`
`matured from claim 31, which was a new claim added in a Preliminary Amendment
`
`filed October 6, 2016 that cancelled all of original claims 1-30 before any examination
`
`and added new claims 31-60. Id. at 87-94. Independent claim 15 matured from claim
`
`45. Id.
`
`38. The Patent Office rejected the claims for nonstatutory double patenting,
`
`but the Office indicated that claims 31-60 were allowable over the prior art. Id. at
`
`140-147. The Office stated that the closest prior art was U.S. Patent No. 5,692,525 to
`
`Counts et al. (“Counts ’525”). Id. at 142.
`
`39. The Office stated that “Counts does not teach or suggest that the rod-
`
`shaped carrier device is operatively positioned such that, during draw, the mixture
`
`comprising the tobacco extract and the aerosol-forming material can be wicked into
`
`contact with the electrical resistance heater and volatilized to produce a visible
`
`mainstream aerosol
`
`incorporating
`
`tobacco components or
`
`tobacco-derived
`
`components that can be drawn into the mouth of the user of the smoking article.” Id.
`
`at 143-144.
`
`
`
`-14-
`
`
`
`Ex. 2001-0014
`
`

`

`
`
`40. Applicant filed a terminal disclaimer (as to several related patents or
`
`applications) to overcome the double patenting rejections. Id. at 183-184, 187-189.
`
`The Office approved the terminal disclaimer. Id. at 192.
`
`41. The Office mailed a Notice of Allowance on October 4, 2017. Id. at 196.
`
`The ’123 patent issued on February 27, 2018. See Ex. 1001.
`
`V. CLAIM CONSTRUCTION
`
`42. Petitioner did not propose any claim constructions in the Petition and
`
`indicated that the challenged claims have their plain meaning. Petition at 10. Based
`
`on my review, Petitioner did not explain what the plain meaning of any claim term is
`
`in the Petition.
`
`43.
`
`It is my opinion that the plain meaning of “wicked into contact,” as used
`
`in claims 1 and 15 of the ’123 patent (“mixture comprising the tobacco extract and the
`
`aerosol-forming material can be wicked into contact with the electrical resistance
`
`heater”), is that the mixture (i.e., the liquid) must be brought into contact with the
`
`electrical resistance heater by wicking.
`
`44. This plain meaning is supported by the specification of the ’123 patent.
`
`For example, the specification states that the resistive heating element 72 “can be
`
`employed in close proximity to an absorbent wicking material such that aerosol-
`
`forming material can be wicked or otherwise transferred so as to contact the second
`
`resistance element or contact an area in close proximity to the second resistance
`
`
`
`-15-
`
`
`
`Ex. 2001-0015
`
`

`

`element (e.g., a region that is exposed to a [sic] the heat produced by the second
`
`resistance element).” Ex. 1001 at 21:38-45.
`
`45. A POSA reading the specification of the ’123 patent would understand
`
`that, for this embodiment where the heater is located in “proximity” to the wicking
`
`material, the liquid (containing the aerosol-forming material) may reach the heater
`
`(the second resistance element) in the following ways: (1) the liquid can be “wicked .
`
`. . so as to contact” the heater; (2) the liquid can be “otherwise transferred so as to
`
`contact” the heater; (3) the liquid can be “wicked . . . so as to contact . . . an area in
`
`close proximity to” the heater; or (4) the liquid can be “otherwise transferred so as to
`
`contact . . . an area in close proximity to” the heater. Ex. 1001 at 21:38-45.
`
`46. A POSA would understand that the claim language in claims 1 and 15
`
`that explicitly states the liquid mixture “can be wicked into contact” is directed to the
`
`first of the four options described above. The claim language “wicked into contact”
`
`is not directed to other ways of transferring the liquid mixture, as the ’123
`
`specification explicitly describes ways other than wicking as different options. Ex.
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`1001 at 21:38-45.
`
`47.
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`There are dependent claims that recite the position of the fibrous or
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`wicking material with respect to the heater. Dependent claim 25 recites that “the
`
`absorbent wicking material is positioned in proximity” to the heater, while dependent
`
`claims 14 and 24 recite that the fibrous or wicking material is in contact with the
`
`-16-
`
`Ex. 2001-0016
`
`

`

`
`
`heater. Ex. 1001 at 33:38-40, 34:23-28. These “positional” limitations are separate
`
`from the “wicked into contact” language in independent claims 1 and 15. The plain
`
`meaning of “wicked into contact” is also consistent with these dependent claims.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`48.
`
`I understand that Petitioner has proposed that a person of ordinary skill
`
`in the art relevant to the ’123 patent would have had a Bachelor’s degree in mechanical
`
`engineering, electrical engineering, chemistry, or physics, or a related field, and three
`
`to four years of industry experience, or a Master’s degree in mechanical engineering,
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`electrical engineering, chemistry, or physics, or a related field, and one to two years
`
`of industry experience.
`
`49.
`
`I further understand that for purposes of its Institution Decision (Paper
`
`9), the USPTO’s Patent Trial and Appeal Board (“the Board”) accepted the
`
`assessment of the POSA offered by Petitioner. Institution Decision at 7-8.
`
`50.
`
`51.
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`I do not dispute Petitioner’s proposed level of ordinary skill in the art.
`
`It is my understanding that when interpreting the claims of the
`
`’123 patent, I must do so based on the perspective of the POSA at the time of the
`
`alleged invention, which I have been asked to assume is the 2006 time frame based
`
`on the patent’s earliest asserted effective filing date of October 18, 2006. I have
`
`interpreted the claims of the ’123 patent based on the perspective of the POSA as of
`
`that date.
`
`
`
`-17-
`
`
`
`Ex. 2001-0017
`
`

`

`
`
`VII. OVERVIEW OF THE CITED REFERENCES
`
`A. Hon (Ex. 1005)
`52. Hon describes an electronic atomization cigarette. Ex. 1005 at 4. As
`
`shown in Hon’s Figure 1 (reproduced below), the electronic cigarette includes air inlet
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`4, normal pressure cavity 5, sensor 6, vapor-liquid separator 7, atomizer 9 with
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`atomization cavity 10, liquid-supplying bottle 11, and mouthpiece 15 within a shell
`
`16. Id. at 6.
`
`53. Hon’s Figure 6 (reproduced below) is a structural diagram of the
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`atomizer 9, which includes atomization cavity 10, long stream ejection hole 24,
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`atomization cavity wall 25, heating element 26, porous body 27, bulge 36, and first
`
`piezoelectric element 23. Id. at 6-7, 11.
`
`
`
`
`
`-18-
`
`
`
`Ex. 2001-0018
`
`

`

`54.
`
`The heating element 26 “may be made of platinum wires, nichrome, or
`
`iron-chromium-aluminum alloy wires containing rare earth elements.” Id. at 6. The
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`atomization cavity wall 25 is surrounded with a porous body 27, which “may be made
`
`of foam nickel, stainless steel fiber felt, high molecular polymeric foam, and foam
`
`ceramic.” Id. “[T]he atomization cavity wall 25 may be made of alumina or ceramic.”
`
`Id.
`
`55.
`
`The bulge 36 of the porous body 27 is in contact with the liquid storing
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`porous body 28 in the liquid-supplying bottle 11 to pull liquid around the outside of
`
`the atomizer cavity wall using “capillary infiltration.” Id. at 7.
`
`-19-
`
`Ex. 2001-0019
`
`

`

`56. When a user draws on (or puffs) the device, a negative pressure is created
`
`in the mouthpiece 15 and air flows into the air inlets 4, through air passage 18 of the
`
`sensor, through the hole in the vapor liquid separator 7, and then is forced through
`
`very small “ejection holes” or slits into the atomization cavity 10 in the atomizer 9.
`
`Id. “The solution in the porous body 27 is driven by the high-speed airflow of the
`
`ejection hole [24] and ejected in the form of droplets into the atomization cavity 10.”
`
`Id. The nicotine solution is first atomized “ultrasonically by the first piezoelectric
`
`element 23” and then “further atomized under the effect of the heating element 26.”
`
`Id. After atomization, small diameter droplets are suspended in the airstream and form
`
`aerosols, which are sucked out via the aerosol passage 12, gas vent 17, and the
`
`mouthpiece 15. Id.
`
`57.
`
`“To simplify the design,” Hon describes another embodiment, where
`
`“the first piezoelectric element 23 on the atomizer 9 may be removed, and the
`
`atomization of the solution relies only on the heating element 26.” Id. The size of the
`
`atomizer may then be smaller, and the “connection structure of the entire atomizer
`
`electronic cigarette is the same as that of Embodiment 1.” Id. Hon also describes
`
`another embodiment, shown in Figure 8 (reproduced below), where the first
`
`piezoelectric element 23 and the heating element 26 in the atomizer 9 can be omitted,
`
`and an additional second piezoelectric element 35 can be arranged in the atomization
`
`cavity. In this embodiment, “the airflow via the ejection hole vibrates the focal point
`
`-20-
`
`Ex. 2001-0020
`
`

`

`
`
`at its center to realize atomization, and the strong ultrasonic atomization effect is
`
`achieved.” Id.
`
`
`
`Brooks (Ex. 1006)
`B.
`58. Brooks “relates to cigarettes and other smoking articles such as cigars,
`
`pipes, and the like, which employ an electrical resistance heating element and an
`
`electrical power source to produce a tobacco flavored smoke or aerosol.” Ex. 1006 at
`
`1:6-10.
`
`59. The ’123 patent specification expressly discusses Brooks, stating that it
`
`discloses “electronic control components” and “sensing mechanism components” for
`
`electronic smoking articles. Ex. 1001 at 20:43-63, 21:2-8.
`
`60. Figures 9 and 10 of Brooks illustrate exemplary time-based control
`
`circuits and related wiring for preferred controllers. Ex. 1006 at 7:5-7. Each of the
`
`
`
`-21-
`
`
`
`Ex. 2001-0021
`
`

`

`
`
`circuits of Figures 9 and 10 includes a power source 34, an electrical resistance heating
`
`element 18, a current actuation mechanism 28, and a current regulating circuit for
`
`controlling the passage of current through the resistance element during periods of
`
`current actuation. Id. at 12:39-46, 15:30-